Sub Title

Our Vision

A world class innovation agency that supports and enables

technological innovation to achieve socio-economic benefits for

South Africa.

Our Mission

To deliver socio-economic value through technological innovation

across the economy.

IP STRATEGY

Presented by: Cordelia Mashau

Kind of product e.g. apparatus, process, formulation, mark, shape of an article, sound recording, recipe or plant variety.

Decide on the kind of protection suitable for the product e.g. patent, design, trade mark, copyright, PBR or trade secrets.

Commercialization strategy:− target market.− commercialization vehicle.

IP Strategy must align with commercialization strategy.

Things to consider

Design

Often shape, colour, pattern and ornamentation are the most

recognisable features and therefore convey commercial

advantage.

May back up a patent or stand alone if competitive advantage

lies in the looks of the product.

Trade marks

Companies come to rely on their names or names of products

to sustain commercial endeavors.

People like to rely on a trusted brand.

Trade mark rights can survive after other forms of IP rights

have expired giving the proprietor a competitive advantage.

Copyright

Inexpensive. Only way to protect computer programs in South Africa. Berne convention protects the work of the citizens of the

member country.

Protection with a patent

Advantages

Statutory protection against third parties; 20 years monopoly – limited competition in the market; Institute legal proceedings against the infringers; International patent applications

− International Search Report (ISR)− International Preliminary Report on Patentability (IPRP)

− Informed decision on whether or not to proceed with the patent protection

Protection with a patent cont…

Disadvantages

The invention is disclosed to the public. There may be risk of

reverse engineering.

Protection is limited to 20 years thereafter the invention becomes

available to anybody to use.

Expensive (patent prosecution costs and maintenance fees).

No examination in the South African patent system. Do your

homework before deciding that a patent is the best option.

Trade secrets

Advantages

Cheap – there are no costs of protection.

Protection is by way of strong Non-Disclosure Agreements

(NDA).

Life time protection unless the trade secret or confidential

information is leaked to third parties.

Trade Secrets cont…

Disadvantages

No statutory protection.

You cannot sue third parties for using your product. You can

only go after a person who leaked the confidential information

on grounds of breach of contract.

There is a risk of leakage of confidential information.

Trade Secrets cont…

Mitigating the risk of confidential information leakage:− Add strong confidentiality clauses in the employment

contracts.− Limit the number of people who have access to the

confidential information.− Limit the access to people who have interest in the business

if possible. It is easy to manage if the trade secret is based on a product

than a method e.g. it is easy to manage if the trade secret is based on a spice than when it is based on the recipe.

Target market

Decide on the countries where the product is going to be

commercialized and apply for protection in each country.

If your target market is SA only you will apply for a patent

protection as follows:

Target market

EPD (0 months) 12 months

prosecute through to grant

Prov Appl Complete application Improve on your invention Decide whether or not to proceed Abandon application

Target market

PCT (International patent application) EPD (0 months) 12 months 30 months

ZA CN USA CA

Prov Appl PCT Publication National

ISR PhaseIPRP

Commercialisation vehicle

Commercialise in-house – a trade secret may suffice for this

model

License – a patent may work better than a trade secret. There

is third party involvement and the management of the trade

secret or confidential information may be compromised.

Sell/assign – the IP rights are transferred to the assignee or

the purchaser. The risk is passed to a third party.

Freedom To Operate (FTO)

Make sure you have FTO when you enter the market.

An FTO analysis is used to determine whether using or

commercialising a product can be done without infringing a

valid IP right of others

IP rights are territorial – one would only infringe in countries

where there is an IP protection for the particular product

Thank you!!!